National Litigation Hotline

The Sixth Circuit has affirmed an award of $5000 in statutory damages to Ford Motor Company against an employee who registered “fordworld.com” as an Internet domain name and then tried to sell the domain name to Ford. Ford Motor Company v. Catalanotte, 2003 WL 22020036 (Aug. 28).

Peter Catalanotte registered the domain name in question in January 1997. Catalanotte knew that Ford circulates a newspaper for its employees called Ford World, the court said. Ford did not know that Catalanotte had registered the name, and he never operated a Web site on the domain. Ford learned of Catalanotte's registration of the domain name in October 2000, when he sent an e-mail to Ford management stating, in part, that he had been “receiving offers from various sources including the competition. I've indicated to the other interested parties that I'm extending this opportunity to you first before any decisions are to be made.” Catalanotte offered to sell Ford the domain name and stated that “[t]he domain name fordworld.com will be available for a short period of time.” In actual fact, the court noted, Catalanotte had not been receiving offers to purchase the name. Ford filed a lawsuit against Catalanotte under the Anticybersquatting Consumer Protection Act of 1999 (ACPA), alleging cyberpiracy, trademark dilution, trademark infringement, and false designation of origin. The ACPA prohibits registering, trafficking in, or using a domain name that is identical or confusingly similar to a distinctive trademark. It also provides for injunctive relief and actual damages or statutory damages between $1000 and $100,000 in lieu of actual damages, the court said. The trial court found that Catalanotte's action violated the ACPA and granted Ford injunctive relief and $5000 in statutory damages. Catalanotte appealed.